Naming is the problem —

Microsoft in danger of losing “SkyDrive” name in UK

British Sky Broadcasting wins trademark case against Microsoft.

A year after Microsoft abandoned the name "Metro" in the face of a reported-but-never-confirmed trademark dispute with German retailer Metro AG, Microsoft is now in danger of losing the name "SkyDrive."

SkyDrive is Microsoft's cloud storage service for both consumers and business customers. British Sky Broadcasting (BSkyB) Group challenged Microsoft's use of the name, saying it infringed on the company's "Sky" trademarks. BSkyB offered an online storage service called "Sky Store & Share" between 2008 and 2011, and it has various trademarks over digital services using the name "Sky" followed by a descriptive name. These include Sky+, Sky Digital, Sky Broadband, Sky Go, Sky Mobile, Sky Bet, and Sky Photos.

A ruling Friday by Justice Sarah Asplin of the England and Wales High Court agreed with BSkyB.

"In my judgment, having taken into account all the learning in relation to the nature of the 'average consumer' who is a reasonably well informed and reasonably observant user of broadband Internet services, if one undertakes a global assessment, there is every reason to conclude that there is a likelihood of confusion in the average consumer in the sense that there is a risk that the public might believe that the services come from the same undertaking or one which is economically linked," Asplin wrote.

Microsoft is not going to give up the name yet, though. In a statement reported by TechCrunch, Microsoft said, “The decision is one step in the legal process and Microsoft intends to appeal.”

In the case of the Metro name, Microsoft offered numerous alternatives, including Modern UI, Windows 8 Style UI, Windows Store Apps, and Microsoft Design Language. In the end, most Microsoft observers (including Ars) have continued using Metro to refer to the Windows 8 touch interface and the related design language and apps.

With SkyDrive, Microsoft may have more incentive to fight BSkyB's claim. While Metro is mainly a descriptor of the distinctive Windows 8 interface rather than the name of the operating system itself, SkyDrive is the sole name of Microsoft's cloud storage service. Given SkyDrive's integration with Office 365 and Office Web Apps, it's also an important piece of Microsoft's strategy for keeping business customers as they move from on-premises productivity software to cloud-based services.

The last thing Microsoft needs is yet another rebranding of yet another product or service. They do more than enough of that on their own, they don't need this sort of external influence. It gives the impression of instability and indecision, even in the (perhaps rare) cases where there isn't any, as would be the case here. Really, their voluntary and unnecessary rebranding has hurt their image some in the past, IMO, by confusing consumers. They need to freeze their branding, which this won't help.

Absolutely stupid ruling. I don't understand how a judge could find in favor of Sky when they don't even remotely compete against each other. Unless Sky has some nascent cloud storage business we're all unaware of.

Derp, should have read this article instead of assuming it was just like the others I read.

Absolutely stupid ruling. I don't understand how a judge could find in favor of Sky when they don't even remotely compete against each other. Unless Sky has some nascent cloud storage business we're all unaware of.

Sky is in the web space as well. They have their own broadband service and as the article states they had a storage product.

Absolutely stupid ruling. I don't understand how a judge could find in favor of Sky when they don't even remotely compete against each other. Unless Sky has some nascent cloud storage business we're all unaware of.

Sky is in the web space as well. They have their own broadband service and as the article states they had a storage product.

/facepalmThat wasn't mentioned in the last article I read about this. That'll learn me for assuming all articles about the same subject give the same amount of information.

Absolutely stupid ruling. I don't understand how a judge could find in favor of Sky when they don't even remotely compete against each other. Unless Sky has some nascent cloud storage business we're all unaware of.

Sky is in the web space as well. They have their own broadband service and as the article states they had a storage product.

Absolutely stupid ruling. I don't understand how a judge could find in favor of Sky when they don't even remotely compete against each other. Unless Sky has some nascent cloud storage business we're all unaware of.

Sky is in the web space as well. They have their own broadband service and as the article states they had a storage product.

i have to wonder if sky.fm (streaming music) is part of bskyb, or if they're about to get sued too?

another big point is that MS is a US company and i'm pretty sure they came up with skydrive in the US before rolling it globally. granted, MS probably intended for it to be global right from the start, but this still just doesn't seem to add up. i mean, why wouldn't a british court find for the british company against a US one?

I have to admit, nothing about the Windows 8 'era' has seemed to go easily for Microsoft. As soon as they nail down one issue, another pops up.

I think this is just a natural result of a much wider community of 'tech' companies. Back in the day, it was reasonably easy to come up with catchy and uncontested names, and it would have been more likely to be MS swinging the club at upstarts for using 'word' or similar in their application names. Nowadays the task of coming up with a name that doesn't at least brush up against an extant trademark elsewhere must be pretty daunting.

another big point is that MS is a US company and i'm pretty sure they came up with skydrive in the US before rolling it globally. granted, MS probably intended for it to be global right from the start, but this still just doesn't seem to add up.

If they intended for it to be global, they should have filed for trademarks elsewhere, and considered the fact that Sky had been an ISP for nearly a decade prior.

Quote:

i mean, why wouldn't a british court find for the british company against a US one?

The word "Sky" is a weak trademark, since it's also a generic word and cannot be fully appropriated. Sky News, BSkyB, etc. are combinations of words and/or acronyms and can have stronger protection.

I don't think SkyDrive is infringing on its face. It's a fantasy trademark composed of generic words (there is no actual thing as a drive in the sky). The whole of the problem seems to be confusion as to who the provider of the goods or services is.

Even in the UK, SkyDrive almost only ever appears associated with Windows or Microsoft. I wouldn't go as far as calling it a notorious trademark, but still... I think there are grounds to dissent from the ruling.

The word "Sky" is a weak trademark, since it's also a generic word and cannot be fully appropriated. Sky News, BSkyB, etc. are combinations of words and/or acronyms and can have stronger protection.

It is a weak trademark which is why it's only going to be enforceable in the areas where there is a clear and recognized Sky branded product or service. This is one of those areas though.

Sky Vegetables Company (we toss your salad!) aren't going to be hearing form many lawyers. By contrast, you'd be hard pushed to use 'Hoover' anywhere in a product name, even in the UK where 'hoover' is a noun.

The word "Sky" is a weak trademark, since it's also a generic word and cannot be fully appropriated. Sky News, BSkyB, etc. are combinations of words and/or acronyms and can have stronger protection.

It is a weak trademark which is why it's only going to be enforceable in the areas where there is a clear and recognized Sky branded product or service. This is one of those areas though.

Sky Vegetables Company (we toss your salad!) aren't going to be hearing form many lawyers. By contrast, you'd be hard pushed to use 'Hoover' anywhere in a product name, even in the UK where 'hoover' is a noun.

I understand what you're saying, but IMHO:

- "Sky" is just an element of the trademark, both in Microsoft's "SkyDrive" and in Sky's "Sky Store & Share". There is no prima facie infringement, i.e. the trademarks are merely similar, and not identical.

- That said, in the case of mere similitude between trademarks, the relevant authorities may or may not declare a trademark infringing. Confusion as to the origin of the products or services is a key factor in finding an infringement. I have doubts that there actually is such confusion. However, the judge in this case found differently. I haven't seen the full decision or the evidence it's based on, but if it's simply the court's opinion, it can be contested, for instance by actually doing a survey.

The word "Sky" is a weak trademark, since it's also a generic word and cannot be fully appropriated. Sky News, BSkyB, etc. are combinations of words and/or acronyms and can have stronger protection.

It is a weak trademark which is why it's only going to be enforceable in the areas where there is a clear and recognized Sky branded product or service. This is one of those areas though.

Sky Vegetables Company (we toss your salad!) aren't going to be hearing form many lawyers. By contrast, you'd be hard pushed to use 'Hoover' anywhere in a product name, even in the UK where 'hoover' is a noun.

I understand what you're saying, but IMHO:

- "Sky" is just an element of the trademark, both in Microsoft's "SkyDrive" and in Sky's "Sky Store & Share". There is no prima facie infringement, i.e. the trademarks are merely similar, and not identical.

- That said, in the case of mere similitude between trademarks, the relevant authorities may or may not declare a trademark infringing. Confusion as to the origin of the products or services is a key factor in finding an infringement. I have doubts that there actually is such confusion. However, the judge in this case found differently. I haven't seen the full decision or the evidence it's based on, but if it's simply the court's opinion, it can be contested, for instance by actually doing a survey.

Given MS went after MikeRowSoft I think you should assume companies will vigorously protect their trademark. Microsoft obviously didn't register this trademark in the EU which for a company their size is ridiculous. They would not have got this trademark if they had tried so they could have come up with another name.

Maybe they could sign a licensing deal with Pacificor and call it a tie-in for their next Terminator film and side-step the issue? I'm sure that associating it with a well known name like "Skynet" would be great for PR.

The word "Sky" is a weak trademark, since it's also a generic word and cannot be fully appropriated. Sky News, BSkyB, etc. are combinations of words and/or acronyms and can have stronger protection.

It is a weak trademark which is why it's only going to be enforceable in the areas where there is a clear and recognized Sky branded product or service. This is one of those areas though.

Sky Vegetables Company (we toss your salad!) aren't going to be hearing form many lawyers. By contrast, you'd be hard pushed to use 'Hoover' anywhere in a product name, even in the UK where 'hoover' is a noun.

I understand what you're saying, but IMHO:

- "Sky" is just an element of the trademark, both in Microsoft's "SkyDrive" and in Sky's "Sky Store & Share". There is no prima facie infringement, i.e. the trademarks are merely similar, and not identical.

- That said, in the case of mere similitude between trademarks, the relevant authorities may or may not declare a trademark infringing. Confusion as to the origin of the products or services is a key factor in finding an infringement. I have doubts that there actually is such confusion. However, the judge in this case found differently. I haven't seen the full decision or the evidence it's based on, but if it's simply the court's opinion, it can be contested, for instance by actually doing a survey.

Given MS went after MikeRowSoft I think you should assume companies will vigorously protect their trademark. Microsoft obviously didn't register this trademark in the EU which for a company their size is ridiculous. They would not have got this trademark if they had tried so they could have come up with another name.

I'm not saying Sky are wrong to defend their trademark, but whether or not they're right is another matter.

As for registering the trademark in the EU, are you just guessing or do you know that for a fact? Anyway, I went ahead and did a search in the European Trademark Office. They filed a request in 2007, which was denied. They filed 2 additional requests this year. So they don't appear to have a registered trademark in the EU, but not for lack of trying as you imply.

I'm probably naïve on this point, but could Microsoft fix the situation by simply 'rebranding' the site for UK consumption by making it "Microsoft SkyDrive" and making sure the term Microsoft is in the branding?

If Sky actually had a product or service called SkyDrive then sure, but really? I would have thought that a cloud storage system is far enough removed from TV broadcasting to be okay.

As mentioned repeatedly there is a "Sky" branded cloud storage system. The Microsoft product could easily be mistaken for the Sky one based on the name alone.

As an aside, "Gmail" was called "Googlemail" in Europe for several years until Google reached an agreement with the original owner of the Gmail trademark in Europe. All addresses created on the European Gmail portal etc ended in @googlemail.com until they the dispute got resolved and they eventually migrated them all across.

Well, SkyDrive sound like a joke, crappy and old, is a good step for Microsoft to change it after all. OneDrive perhaps?!

I also think that SkyDrive is a terrible name as Sky has absolutely nothing to do with the service. I think that Microsoft should look at this as opportunity to re-brand the drive with a name that implies always available and offsite protected - I am sure that Microsoft has branding gurus available who can come up with an acceptable name.

Windows 8.1 gives them a great opportunity to move forward with re-branding/brand awareness.